Unlike England, there are no local enterprise partnerships in Wales. Instead, Business Wales offers the same sort of advice and support that used to be provided in England by Business Link under the strategic oversight of the Welsh government. There are therefore no Business and IP Libraries though Llandudno junction was once part of the PatLib network (see A New Patlib has opened at Llandudno Junction North Wales15 April 2011 Patlib UK). The nearest English Business and IP Centre is at Liverpool Central Library.

As there are no Business and IP Centres in Wales Liverpool Central Library hosts the nearest CIPA patent clinic. Advice on contracts, copyrights and trade marks is also available through specialist clinics at the library. The only IP clinic in Wales takes place at the Intellectual Property Office in Newport. A search of the CIPA and CITMA databases suggests that all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff.

Business funding in Wales is offered by the National Development Bank of Wales which trades under the Banc trade mark. The Bank has four offices in Wales the nearest being at St Asaph and Wrexham. According to the "About Us" page of its website, it offers both loan and equity finance. A list of the funds it manages also appears on its website, There is also a business angel network known as Angels Invest Wales

Anyone wishing to discuss this article or any matter arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

13 January 2019

An intellectual asset ("IA") is something that gives a business an advantage over its competitors. No matter how small it may be or how simple its business model, almost every successful business will have such assets. An IA may be the business's reputation, its customer list, a way of making or packaging things, a website or even its standard terms and conditions.

A business that possesses such an asset will want to hold on to it and, if possible, make money from it. Its best chance of doing so is to devise a plan to

identify assets likely to generate revenue or some other benefit for the company,

determine the best legal protection for the IA having regard to its value and available resources,

provide a means of enforcing such protection, and

manufacture, license or otherwise make money from the asset.

Such a plan is often called "an intellectual property" or "IP strategy".

Inventing is a business activity. If an inventor is employed in a research and development capacity, his or her employer is likely to have an IP strategy. If the inventor is not so employed, he or she would be well advised to develop such a strategy for him or herself.

The starting point for a private inventor must be his or her invention. Is anyone likely to buy it? If so, who will be its buyers and how many will they buy? Developing, marketing and patenting an invention, not to say enforcing a patent, is likely to be costly. Unless those costs are likely to be recouped, there is no sense in incurring them. For many private inventors this is a very difficult question. The technical elegance of their brainchild may blind them to commercial realities. This is where membership of an inventors' club can help. The members of such clubs are not a bad cross-section of the general public. If fellow inventors are unmoved by the invention or see snags their views should be considered seriously.

The next issue to address is putting the invention on the market. That usually boils down to a choice between making and marketing the invention or licensing others to make and market it. Some inventors already have their own manufacturing or retailing businesses but many do not. If they want to make or market the invention for themselves they have to set themselves up in business. They will need to draw up business plans, find collaborators, raise funds, acquire premises, plant and staff and market their inventions to the public. They may subcontract production to a manufacturer in this country or abroad. If they do that, they must ensure that their invention is patented or otherwise protected in the country where the manufacturing is to take place and they will need a very tight written agreement with the sub-contractor.

Licensing is often regarded as an easy option but it is not. A licensee will incur costs in tooling and marketing. A business will incur those costs only if persuaded that to do so would be worthwhile. Determining whether a licence is worth taking is a type of business planning that few potential licensees have the time or inclination to carry out. It is therefore up to the inventor to persuade them that it is worthwhile. Daunted by such difficulties many inventors resort to invention promotion companies or making unsolicited offers to manufacturers or retailers. Such approaches rarely work and often lead to expenses for the inventor.

Patenting is expensive but may be necessary. Ideally, the invention must be protected in the countries where it is to be sold and the countries where it can be made but such protection may cost many tens of thousands of pounds in flings, translations and renewal fees. The trouble with a patent is that the inventor discloses his or her invention to the world in return for a monopoly in a single country. If a patentee has a patent for his invention in the United Kingdom but not the United States there is nothing to stop an American from making and selling the invention in the USA or anywhere else where the invention is unprotected. There may be other, cheaper forms of legal protection for the invention that are available to the inventor. Simply keeping schtum about the invention is one option if the invention is a product that is hard to reverse engineer is one option. Relying on some other IP right such as unregistered design right in the shape or configuration of the product or copyright in any software that may control the device may be another.

An inventor must be able to resist applications for his patent or other IP right's revocation or invalidation or declarations of non-infringement as well as to pursue infringers in the Senior Courts. Even with costs caps and cost management civil litigation can be cripplingly expensive. The only way that most businesses can sustain such expense is by taking out adequate IP insurance and the premiums for such cover are not cheap.

An IP strategy can be drawn up at any time and it will be reviewed and updated continuously but the ideal time to devise one is when drawing up a business plan. That is because the costs of prosecution, procurement, professional services, premiums and so on can be funded and balanced against other expenses.

Anyone wishing to discuss this article should call me during office hours on 020 7404 5252 during office hours or send me a message through my contact form.

"Pontio Innovation is about equipping individuals and businesses with the tools they need to succeed in the modern economy. With a focus on transdisciplinary working and rapid prototyping, the Co-Lab, Media Lab, Hackspace and Fablab areas are equipped with cutting-edge technologies. It will boost the University’s cross-disciplinary teaching programmes and encourage collaborative work between students, staff and local businesses. Check out the Innovation Events page for details about what's going on here and read more about the Pontio Innovation philosophy."

For artists, designers, inventors and other makers it is important to translate an idea in the brain or on a sheet of paper into three-dimensional objects that they can show to collaborators, investors and customers. That is where the three-dimensional printers, laser cutters and other equipment at the centre's FabLab can help.

A FabLab is a fabrication laboratory and I have written quite a lot about them in this and other blogs. Readers can find more information and links to some of those articles in Liverpool Inventors Club Re-launch - Fabulous FabLab28 Jan 2012. The Pontio offers training in the use of that equipment and access to the machines which can be booked through the centre's website. Details of those courses can be found on the "Innovation Events" page.

There is also some very good information about innovation generally on the "Pontio Innovation" page. The only topic that appears to be missing from that page is a mention of intellectual property. For the benefit of users of the Pontio innovation space as well as artists, designers, inventors and makers generally I shall try to fill that gap here.

Users of the Hwb's facilities should be aware that the laws that protect their intellectual assets also protect other peoples'. They must be careful not to copy beyond what is expressly or impliedly licensed, to check for registered rights such as patents, trade marks and registered designs and, wherever possible, to take out specialist IP insurance to enforce their own rights and to resist infringement claims by others.

Anyone wishing to discuss this article or any topic raised in it is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

The competition was launched in August 2017 and received over 180 entries. A shortlist of 10 finalists was announced in NESTA Inventor Shortliston 31 Jan 2018. Each of those finalists received £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions.

The shortlisted inventions have now been evaluated and Neurofenix Limited' is the winner. Its invention is the Neuroball which encouragea stroke patients to perform hand and arm exercises and thereby recover their manual dexterity.

Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 or message me through my contact form.

08 June 2018

Tomorrow is a big day for inventors. It is significant because it is the day on which Directive 2016/943 ("the Trade Secrets Directive") is due to be implemented. Every country in the EU, including the UK, has to bring its laws on trade secrets into line with the Directive by 9 June 2018. It concerns inventors because every patented invention is supposed to start out as a trade secret and for many other inventions that's the way they remain.

Why was the Directive adopted?
At paragraph (9) of a set of paragraphs known as "the recitals", the European Council and Parliament explained that they adopted the Directive because there are big differences in the way that different countries protect trade secrets giving rise to uncertainty, causing unnecessary expense and impeding new product development in Europe.What does the Directive do?The most important provision is art 6 (1) which requires EU member states to "provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against the unlawful acquisition, use and disclosure of trade secrets."

What is a "Trade Secret"?
For the purpose of the Trade Secrets Directive a ‘trade secret’ means

"information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

Basically that has always been the position in the UK but that was not the case in every country.

What is meant by Civil Redress?
Basically injunctions (orders by a judge) not to acquire, use or disclose trade secrets in future or the payment of compensation or other monetary relief for unlawful acquisition, use or disclosure of trade secrets in the past. In some circumstances, injunctions and other relief such as orders for the preservation of evidence or assets can be granted before the issue of proceedings.

Do we have to comply with the Directive as we have voted to leave the EU?
Yes as the UK remains a member of the EU until 29 March 2019 at the very earliest and we should have to abide by EU law until 31 Dec 2020 under the draft withdrawal agreement or even longer under the proposed backstop agreement. More importantly this Directive works in favour of British business because entrepreneurs and inventors know that for the first time the trade secrecy laws of the other countries of the EU are more or less in line with those of the UK.

What has HMG done to comply with the Directive?
HM government believes that our law of confidence and contract law plus our Civil Procedure Rules already comply with most of the provisions of the Trade Secrets Directive but it has identified a few issues where they do not. One concerns definitions and the other the time limits within which an action for unlawful trade secret acquisition, use or disclosure must be launched. Also there is some doubt as to whether the Scottish courts have the powers to make the orders required by the Directives. To address those issues, Mr Sam Gyimah MP, Minister of State at the Department for Business, Energy and Industrial Strategy, has signed The Trade Secrets (Enforcement, etc.) Regulations SI 2018 No 597 which will come into force tomorrow.

So what do Inventors need to know?
Even though reg 3 (1) of the regulations makes clear that the existing law of confidence still applies in relation to trade secrets the Directive may give trade secret holders (that is to say, persons lawfully controlling trade secrets) greater rights and powers. Also, we are used to talking about "confiders", "confidantes" and "breaches of contract" while the Trade Secrets Directive introduces new terms time like "trade secret holders", "infringers" and "infringing goods". It would probably be a good idea for trade secret holders to ask their lawyers to review their terms and conditions, standard contracts and, in particular, non-disclosure and confidentiality agreements to make sure that they are still effective.

06 March 2018

I am very sorry to learn of the death of the inventor, Trevor Baylis CBE. I met him on two occasions. The first was the Brass from Gumption event at the Huddersfield Media Centre and the University of Huddersfield on 18 Feb 2005 where Mr Baylis ran a brainstorming session (see Bright Ideas Get a Boost26 Jan 2005 Huddersfield Examiner). The second was at an LES meeting in Leeds hosted by Liz Ward at her previous law firm.

Mr Baylis founded the business Trevor Baylis Bands which has published his biography on its website. It will be seen that he was a remarkable man and although I did not see eye-to-eye with on everything - particularly not criminal liability for patent infringement which I debated with him on at least one occasion - I had a lot of time for him.

An issue that I have found with many inventors is that while they may be very good at finding technical solutions to life's problems they are not always very good at making money from their inventions. One of the reasons for that is that they have never had any training in business or digital skills.

One place where they can acquire such skills is a Google Digital Garage of which there are now three in the United Kingdom:

Training is also available online. Classes range from "First Steps Online" for absolute beginners to coding and there is also one-to-one coaching.

Yesterday I visited the Manchester Digital Garage where i received some coaching in domain name direction and attended an hour's class in web design where we all made a simple website using Google sites. You can read about what happened in Visit to Manchester's Google Digital Garage 6 March 2018 IP North West.

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

In Congratulations to the Inventor Prize finalists26 Jan 2018, NESTA reports that it had received 180 applications from across the UK which were judged by a panel of 8 judges (one of whom was Claire Mitchell of Chillipeeps who had addressed both the Leeds and Sheffield inventors clubs) in accordance with the following criteria: innovation, insight and impact, quality and safety and market potential and feasibility.